Archived updates for Wednesday, November 07, 2007

Abolishing Continuations (and More?) at the USPTO

There is a strong and unresolvable inconsistency between a concern about patent quality at the USPTO and opposition to limiting or abolishing continuing applications. People concerned about “patent quality” should want the USPTO to be able to obtain final decisions as to the patentability of applications it has examined. But the USPTO will continue to be unable to obtain such final decisions so long as applicants (or their attorneys) can avoid final decisions by refiling their applications. Thus the “patent quality” problem will persist so long as the USPTO remains unable to obtain final decisions as to the patentability of applications it has examined, and can rid itself of persistent applicants only by allowing their applications.

Hopefully the USPTO will change direction, and, rather than persisting in a problematic lawsuit, will seek discrete legislation to abolish all continuing applications except for divisionals filed pursuant to a Sec. 121 Requirement for Restriction, as thewriter has proposed elsewhere. (see this) Such continuing applications comprised about 25% of the applications filed in 2006, whereas the proposed Rule would have affected only 2.7% of filed applications, and, thus, even if finally permitted, will have only a negligible effect.

Abolition would, in addition, increase USPTO resources available for the examination of original applications by about 1/3, without any increase in staff or budget, which should further enhance patent quality. And, of perhaps even greater importance, abolition would eliminate the abuses made possible by continuing applications that were identified by Professor Lemley and Judge Moore in their Boston University Law Review article (84 BU Law Review 63). Such discrete legislation to abolish continuing applications, uncoupled from the patent reform morass presently in the Congress, would enable (force?) the “patent crowd” to face their contradiction and decide whether to resolve the inconsistency in favor of patent quality (and innovation), or in favor of their own convenience.

But Cecil, why stop at continuations? Why not simply abolish the initial examination of patentability altogether, much like the UK Intellectual property Office has abolished relative grounds for refusal of trademark applications. Instead, let's focus our resources on the patents that really matter (say those under threat of enforcement) in a speedy inter-partes reexamination/opposition system (perhaps with the USPTO as a party representing "the public interest," similar to Section 337 investigations before the ITC) where those with greatest commercial interest in the technology will be highly motivated to conduct a complete patentability search and present the best legal arguments. Can we really afford a patent system where all (continuing) applications are treated equally?